Case Update

Online Defamation: The need for proper evidence

Nagandran Kalianna Gaundar (berniaga dibawah RAJU RESTOREN) v.Melinda Alison Monteiro & Ors

GUAMAN NO: S4-23-42-2003

In this case, the Plaintiff sued the Defendants for an email containing defamatory statements allegedly sent out by the 1st Defendant and published to third parties. It was disputed that the e mail was sent out by 1st Defendant and was published to the third person.

The Plaintiff testified that the email was received by a customer of his restaurant and downloaded and photostatted by the customer to be given to the Plaintiff. However, the said customer was not called as a witness. The Court held that the failure to call the customer is fatal to the Plaintiff’s case.

The Plaintiff does not have personal knowledge regarding the transactions of the said email. Thus, the evidence of the customer is the most important being the backbone of the Plaintiff’s case. There was no evidence adduced that an attempt had been made to locate the customer.

As the customer is not available to give evidence, the Court disregard the email as well as the oral evidence by the Plaintiff relating to the same.

Furthermore, the email did not contain any information who was the sender. The only information stated in the e mail is the identity of the recipients and that it was forwarded by one Joanne Oh on 5.11.2001. In the absence of any marks on the e mail to identify its sender, it was therefore critical for the Plaintiff to prove that the 1st Defendant did in fact send the e mail.

The court holds that the Plaintiff has failed to establish his claim against both Defendants and therefore the Plaintiff’s claim is dismissed with costs.

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Sherrina Nur Elena bt Abdullah v Kent Well Edar Sdn Bhd

Kota Kinabalu High Court Suit No.: K22-187-2009-I

The Plaintiff, who was a beauty queen, sued the Defendant for publishing, without consent, her photograph and image appearing on packaging of the Defendants’ products, particularly packages of rice being displayed and sold in various retail shops, grocery stores, supermarkets and hypermarkets in Kota Kinabalu.

The Plaintiff also discovered that her photograph and image on the Defendant’s packagings appeared on a large advertisement board
located at Kota Kinabalu, Sabah.

The Plaintiff sued for for copyright infringement and invasion of privacy.

The High Court held that:-

  1. The Plaintiff’s action for copyright infringement fails because she is not the owner of the copyright. The photographs of her were created by organizers of events where she attended or by the photographers who took them. Therefore, she has no locus standi to initiate the action.
  2. In Malaysia, the law on the invasion of privacy has developed. It is desirable especially in this internet era of Facebook and YouTube where lives can be destroyed by such unwanted invasion of privacy.
  3. Although the Plaintiff is at liberty to sue the Defendant for invasion
    of her privacy, in the instant case the Defendant did not intrude
    onto private property and took the photographs of the Plaintiff
    without her consent.
  4. The photographs were taken many years ago by someone else at beauty pageants where she participated willingly as a contestant and in public. It was not a private affair on a private property. The photographs as exhibited were also not offensive.
  5. The Plaintiff did not complain then that she had been humiliated or ridiculed or scandalized by the photograph or image.
  6. From her affidavits, these pageants were reported and the photographs were published in the local newspapers. The particular photograph or image which the Plaintiff complained was an invasion of her privacy was also published in the book by the Sabah Tourism Board in 1992. It was reproduced by the Defendant on its products. These photographs are in the public domain and cannot amount to an invasion of her privacy.

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Stemlife Berhad v Bristol-Myers Squibb (M) Sdn Bhd & Arachnid Sdn Bhd

First published on 10 August 2009

CIVIL SUIT NO S6-23-95-2008 (HC)

Arachnid Sdn Bhd (“Arachnid”) provides web development and related services. In 2003, Bristol-Myers Squibb (M) Sdn Bhd (“Bristol-Myers”) engaged Arachnid to set up a website, www.meadjohnsonasia.com (“the website”). Arachnid thereafter also provided maintenance services for the website.

The website hosts a forum known as the Asian Mom Network (“the forum”), a platform for Asian parents to share tips and views on parenting.

In 2007, Stemlife Berhad (“Stemlife”) brought an action against Arachnid for online defamation, alleging the latter was responsible for certain defamatory statements made by users of the forum.

Arachnid sought to strike out Stemlife’s suit on the basis that it disclosed no reasonable cause of action or was frivolous, vexatious and an abuse of process of the court.

The High Court in Kuala Lumpur struck off the claim by Stemlife. This case highlights the extent of liability for online defamation in Malaysia.

The court held that Stemlife’s suit had no reasonable cause of action on the grounds that:

a) Arachnid’s role was simply to set up and maintain the website for Bristol-Myers. Arachnid is Bristol-Myers’ web agency and the website belongs to Bristol-Myers;

b) Arachnid was not the author and editor of the words complained of. Stemlife had identified the authors as being the forum users, and one of the defamatory statements did not appear on the website but through a hyperlink to another website. Therefore, Arachnid could not be the publisher of the words complained of; and

c) Arachnid, which merely provides the service of setting up and maintaining a website, could not be held responsible as a “publisher” under the law of defamation.

Further, the suit by Stemlife was frivolous, vexatious and an abuse of process of the court in that:

(a) Arachnid was engaged by Bristol-Myers to set up the website;
(b) Arachnid provided maintenance services, including providing updates and upgrades upon the instruction of Bristol-Myers. The court held that it was not sufficient to attach liability on the part of Arachnid;
(c) There was no participation by Arachnid in the promotion of the forum;
(d) The contents of the website would not be within the knowledge of Arachnid, unless informed by Bristol-Myers;
(e) Arachnid did not control content posted on the forum, nor did it moderate or monitor the forum. Any postings on the website would only be removed upon the instruction of Bristol-Myers; and
(f) Stemlife had not shown as to how Arachnid contributed to, or was “knowingly” involved in, the publication of the words complained of.

The court also held that Arachnid had no control over the contents of the website, and had never played an active role in respect of the publication. Neither would Arachnid have knowledge of the contents of the words posted on the website.

Based on the above reasons, the High Court allowed the application by Arachnid to strike out Stemlife’s writ and statement of claim, which it dismissed with costs.

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Philip Morris Products SA v Ong Kien Hoe & Ors

First published on 22 October 2009

CIVIL SUIT NO S6-23-95-2008 (HC)

Philip Morris Products SA (“Philip Morris”) is a manufacturer and distributor of cigarettes and tobacco products under the trade mark of ‘MARLBORO’ throughout the world and the proprietor of the registered trade mark “MARLBORO” in Malaysia.

On 10 September 2002, the officers of the 3rd Defendant (Director General of the Customs and Excise Department of Malaysia) detained 2 containers containing 1350 unmarked bale boxes containing cigarettes bearing the trade mark of ‘MARLBORO’.

These cigarettes were subsequently found to be counterfeit cigarettes. Philip Morris initiated an action against the 3 defendants but finally went to trial only against one, the 2nd defendant, who is a forwarding agent. Along the way, the claims against the 1st and 3rd defendants were withdrawn.

According to the declaration forms completed by the 2nd defendant and filed with the 3rd defendant, the consignors of the 2 containers were the 1st defendant. The declaration forms, packing and shipping of the goods in the containers were arranged by the 2nd defendant.

Philip Morris claimed against the 2nd defendant for infringement of Philip Morris’s trade and proprietary rights over the registered trade mark of ‘MARLBORO’. The infringement was said to have been committed by the 2nd defendant by passing off or attempting to pass off counterfeit cigarettes

(a) by its action in the transshipment, loading, unloading, reloading, transloading, storing, transitional storing, transiting, transporting, transshipping, transferring and/or dealing in any other manner in the course of trade with the counterfeit cigarettes;

(b) without the consent, authorisation or knowledge of Philip Morris dealt in or with the counterfeit cigarettes and/or counseled, instigated, procured, enabled, directed or assisted in the doing of those same acts.

The 2nd defendant is also alleged to have shown its direct complicity with the counterfeit cigarettes not only with regard to the importation and customs clearance but also in claiming ownership to obtain release and delivery of the counterfeit cigarettes to itself.

The 2nd defendant’s defence was that, among others:

(a) that it was merely carrying out its duties and obligations as a forwarding agent for a named principal;
(b) that it was not responsible or liable for the infringement; and
(c) the counterfeit cigarettes were seized within the free zone which is deemed to be a place outside Malaysia. That being so, not only is there no levy within this zone, the laws in Malaysia including the Trade Marks Act 1976 do not apply. Further, the ‘goods in transit’ are also exempted from seizure.

The High Court allowed Philip Morris’s claim with costs and held the following:

(1) The trade mark on the cigarettes seized from the 2 containers bore a trade mark identical to Philip Morris’s registered trade mark. Since Philip Morris had not authorised or licensed the 2nd defendant to use that registered trade mark there was infringement.

(2) The 2nd defendant was not a mere forwarding agent. On the facts the 2nd defendant did a lot more. In this regard:

(a) Firstly, the whole process from documentation to the handling of the cigarettes or the consignment is part and parcel of the course of the 2nd defendant’s trade or business as a forwarding expert. The 2nd defendant’s use is not as a private consumer. The documentation work related to the clearance of the cigarettes was an integral part of the expertise and trade of the 2nd defendant. It is the 2nd defendant who represented to others including the 3rd defendant that the goods in the 2 containers were cigarettes. Obviously these cigarettes must have a brand or be of a particular make, whatever that may be. The fact that the contents of the 2 containers cleared the Free Zone authorities indicates that these authorities must have believed that the 2nd defendant was authorised or licensed to ‘use’ in the sense of handling the cigarettes and clearing them in the course of its trade as a forwarding agent.

(b) Secondly, the 2nd defendant unstuffed counterfeit cigarettes and later consolidated these cigarettes with the other consignment of counterfeit cigarettes and paper bags. This required the 2nd defendant to open up the containers and deal with their contents. Although there is no need for the 2nd defendant to know for a fact that these cigarettes bore some particular registered trade mark, it is naive to suggest that the 2nd defendant is not aware at that time that it is handling cigarettes bearing the trade mark ‘MARLBORO’. Having being in the forwarding business for almost 15 years it is fair to impute that the 2nd defendant is at least generally aware of trade marks and counterfeiting or infringements of trade marks. Having opened the containers to consolidate their contents the trade mark must have been obviously displayed.

(c) Thirdly, the use of fictitious names and addresses admitted by the 2nd defendant indicates the existence of some element of complicity. Given that s 133(1) of the Customs Act 1967 (Act 235) makes it an offence to, among others, make a declaration which is untrue or incorrect in any particular, The Court held that the 2nd defendant’s argument that they are not obliged to ensure accuracy of the particulars in the documents presented for clearance of the cigarettes is unsustainable both in law and on the facts. On the contrary, ss 80 and 90 mandate the 2nd defendant with certain duties and liabilities for ensuring the completeness and accuracy of the details of the goods declared.

(3) The Free Zone is not free for all area, free of all laws or, that there is lawlessness in this zone. The enforcement agencies continue to hold jurisdiction over and in these Free Zones. In any event the issue of the validity of the seizure was immaterial and irrelevant to the success or otherwise of Philip Morris’s claim. Philip Morris’s rights in the registered trade mark were rights in rem.

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Suria KLCC Sdn. Bhd. v Makamewah Sdn. Bhd.

First published on 10 December 2009

CIVIL SUIT NO K22-22 OF 2009-II (HC)

Suria KLCC Sdn. Bhd. (“Suria KLCC”) has been the registered proprietor of the trade marks “Suria KLCC”, “Suria KLCC & Swirl device” and the “Swirl device” in Class 35 and 36 under the Trade Marks Act 1976. Suria KLCC is engaged, among others, in the business of leasing and managing a shopping centre as well as providing business and property management services. When providing those services or in offering those services, it is presented to the public by Suria KLCC using the trade marks “Suria KLCC” and/or “Suria KLCC & Swirl device” and/or the “Swirl device” (‘Suria KLCC’s trade marks’).

A shopping complex owned and managed by Suria KLCC is strategically situated in the vicinity of the Petronas Twin Towers, a well known landmark of Malaysia. Suria KLCC says its shopping complex bearing its trade marks is one of the premier shopping complexes in Malaysia.

On or around the 7.5.2008, Suria KLCC became aware that Makamewah Sdn. Bhd. (“Makamewah”) had started development and construction of a commercial complex which was being advertised, promoted and operated or managed or leased by Makamewah using the name of “Suria Sabah” and/or “Suria Sabah & Swirl device” and/or a “Swirl device” (‘Makamewah’s said trade marks’).

Suria KLCC asserts that the actions of Makamewah in offering the said sales, lease and services to the public constitutes an infringement of Suria KLCC’s said registered trade marks and an act of passing off of Makamewah’s goods and services as those of Suria KLCC.

On 11.2.2009, Suria KLCC commenced an action against Makamewah and applied for an application for interlocutory injunction to restrain Makamewah from, among others, infringing its trade marks and pass of its trade as the trade of Suria KLCC by using the name “Suria” and/or the “Swirl device” and/or “Suria & Swirl device” or any part or parts thereof or any other business name or style which is identical with or so nearly resembling the same.

Makamewah admits that it has since 22.06.2006 started construction works on a shopping complex in Kota Kinabalu, Sabah which is being advertised, promoted and operated / managed / leased by Makamewah using the name “Suria Sabah” together with the logo of a stylized sun with its eight (8) rays arranged in a swirl which sits above the letter ‘i’ in the word “Suria”. But Makamewah denies that it is in any way infringing Suria KLCC’s trade marks or passing off its goods and services as that of Suria KLCC for the following reasons.

In its arguments, Makamewah claimed, among others, the following:

(1) Suria KLCC has no exclusive use of the letters “KLCC” and also the word “Suria”;
(2) the exclusivity of Suria KLCC’s trade mark “Suria KLCC” is only applicable when those words are used together;
(3) the word “Suria” is not a word invented by either Suria KLCC or Makamewah and that Suria KLCC should not be allowed to claim exclusivity over it as it is a generic and commonly used word derived from the Hindu sun god “Surya”;
(4) Makamewah chose to use the word “Suria” in conjunction with the word “Sabah” for its shopping complex in Kota Kinabalu, Sabah as “Suria” is the Bahasa Malaysia translation for the sun which rises first in Sabah as the eastern-most state of Malaysia; and
(5) Makamewah chose eight (8) rays arranged in a swirl in its stylized logo of the sun as eight (8) is symbolic in the Chinese custom and belief that the number eight (8) symbolizes wealth and prosperity.

The High Court dismissed Suria KLCC’s application for interlocutory injunction with costs and held the following:

(1) There is serious issues to be tried. Suria KLCC has produced sufficient evidence at this stage of the case to show that it has since 1998 actively advertised and promoted its said trade mark and has built up extensive goodwill and reputation in Suria KLCC’s business in respect of its said trade marks such that when used in relation to the provision of leasing and management services of a shopping centre and provision of business and property management services, Suria KLCC can claim that its said trade marks has come to be associated by the public with Suria KLCC and with no other party and that Makamewah by using the word “Suria” and / or the “Swirl device” and / or “Suria and Swirl device” in association with the shopping complex it is building in Kota Kinabalu, Sabah is liable to Suria KLCC for trade mark infringement and passing off. Whether Suria KLCC will succeed in its claim is a matter that must be decided at trial.

(2) Makamewah’s challenge to Suria KLCC’s right to the exclusive use of the mark “Suria” and whether the word “Suria” is a generic and commonly used word which derives from the Hindu sun god “Surya”, are matters which give rise to serious issues of law and fact which need to be investigated at a trial and are not matters which can be resolved at this stage of the case on a mere reading of disputed facts in the affidavits of the parties. Likewise, Makamewah’s contention that its trade mark is not identical to that of Suria KLCC’s trade marks nor do they resemble Suria KLCC’s trade mark so as to deceive or cause confusion in the course of trade, are matters which give rise to factual issues which it is not suitable to decide at this stage of the case on affidavit evidence alone. They should only be decided at the trial.

(3) Makamewah’s contention that no damage has been caused to Suria KLCC’s business and reputation or goodwill as Makamewah’s shopping complex is still under construction and Suria KLCC has failed to produce any evidence of the damage it has allegedly suffered should be decided in trial. At this stage of the case, all Suria KLCC has to show is that there is a likelihood of confusion on the part of the public and that there is a likelihood of damage to Suria KLCC’s business, goodwill and reputation and the Court is satisfied that Suria KLCC has succeeded in showing that there is a likelihood of such confusion and damage.

(4) The Court finds that that damages would not be an adequate remedy to Suria KLCC if it were to eventually succeed in its claim at the trial of this action. The same may be said of Makamewah too. The Court also finds that damages would be an adequate remedy to Makamewah if it were to eventually succeed at the trial.

(5) The balance of justice does not lie in favour of the grant of an injunction in this case. The relief sought by Suria KLCC is equitable in nature and it is well settled law that delay defeats equity.

(6) There has been considerable delay on the part of Suria KLCC in coming to the court for relief. The evidence shows that Suria KLCC became aware of Makamewah’s alleged infringement of its trade marks on or around 7.5.2008 and had written twice to Makamewah since then requesting the latter to cease infringing its trade marks but Makamewah refused to do so. Suria KLCC delayed for some nine (9) months before making this application. Suria KLCC has explained that the delay was caused by it having to seek legal advice from solicitors in Kuala Lumpur and Kota Kinabalu and to co-ordinate instructions between two law firms; that it needed additional time to do proper investigations to compile necessary information and documents; that the affidavits which needed to be filed had to be sent from Kota Kinabalu to Kuala Lumpur and back. The Court finds the explanation for the delay reasonable or acceptable.

(7) Given the fact that Suria KLCC was already aware of Makamewah’s alleged infringement of its trade marks in May 2008, the Court did not accept Suria KLCC’s explanation that it takes nine (9) months to obtain legal advice and to send documents between Kuala Lumpur and Kota Kinabalu. With regard to the alleged investigations which Suria KLCC needed nine (9) months to undertake, Suria KLCC has not attempted to assist the court by saying what it was that needed investigating or the nature of such investigations and why it took nine (9) months to do so.

(8) In the circumstances, it would be inequitable for Suria KLCC to expect the court to preserve the status quo ante by the grant of an injunction when Suria KLCC itself did not act with promptitude and in good time to preserve that status quo which it wants the court to preserve.

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Lew Cher Phow @ Lew Cha Paw & Ors v Pua Yong Yong & Anor

First published on 10 March 2010

(Johor Bahru High Court Suit No. MT4-22-510-2007)

In this case, the Plaintiffs and the Defendants were neighbours. The High Court had dismissed an application by the Plaintiffs who applied for an order for interlocutory injunction to restrain the Defendants from installing any CCTV cameras at the Defendants’ house which faced the Plaintiffs’ house as well as also for an order to compel the Defendants to remove their CCTV cameras that were installed facing the Plaintiffs’ house.

The Plaintiffs alleged that the act of the Defendants installing the CCTV cameras had intruded their livelihood and daily activities. The Defendants on the other hand alleged that the CCTV cameras were for security reasons as their house had been intruded before and also that the CCTV cameras only showed the Plaintiffs’ house as background.

The grounds given by the High Court in dismissing the Plaintiffs’ application are, among others, as follows:

(a) there is no evidence to show that the CCTV cameras intruded the livelihood and daily activities of the Plaintiffs. Further, there is no evidence in the Plaintiffs’ affidavit to show that the CCTV cameras recorded the Plaintiffs’ activities.

(b) the Defendants are entitled to install CCTV cameras for security and safety purposes.

(c) if the interlocutory injunction is granted this will bring a legal implication to the general public especially when CCTV cameras are installed at residential and commercial premises to protect the safety of the general public.

(d) there is no right of privacy in Malaysia thus the Plaintiffs do not have the right to institute an action against invasion of privacy rights.

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Giordano defeats Giordano

Published on 14 September 2010

Walton International Limited v Yong Teng Hing B/S Hong Kong Trading Co & Anor (Civil Appeal No: W-02-685-2008)

The appellant is the registered proprietor of “GIORDANO” trade mark and other related trade marks in Class 25 (for garments and wearing apparels; jeans, T-shirts, pouch, accessories, trousers, clothing, footwear and headgear and articles of clothing), Class 18 (for leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery); and Class 13 (for GIORDANO ladies).

The appellant’s predecessor in title, Giordano Limited has sold and exported substantial quantities of goods bearing “GIORDANO” trade mark, such as articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets umbrellas and fashions accessories, to many countries including Malaysia. All the “GIORDANO” trade mark and other related trade marks worldwide together with the goodwill and reputation in connection with the trade marks were assigned to the appellant in 1991.

The respondent on the other hand, is the sole proprietor of Hong Kong Trading Co. He ventured into businesses of selling watches with leather and imitation leather straps in 1986, and selling optical and sun glasses, and cases made of leather or imitation leather in 1992, in Malaysia. All the goods sold and dealt with by the respondent used the “GIORDANO” trade mark. He had in fact applied to register the “GIORDANO” trade mark for goods in Classes 9, 14 and 18 and had obtained registration of “GIORDANO” trade mark in Class 14.

The respondent filed an application for registration of the trade mark “GIORDANO” at the Registry of Trade Marks, Malaysia in 1992 for optical and sun glasses in Class 9. The appellant filed an opposition against the respondent’s application on the grounds, inter alia, that the “GIORDANO” trade mark applied for by the respondent is identical or similar to the appellant’s “GIORDANO” trade mark.

The Registrar dismissed the said opposition and the appellant filed an appeal to the High Court against the Registrar’s decision in dismissing the said opposition. The learned High Court judge dismissed the appeal and decided in favour of the respondent i.e. rejecting the appellant’s opposition and accepting the respondent’s application for registration of “GIORDANO” trade mark for Class 9. The appellant then appealed against the High Court decision to the Court of Appeal.

Allowing the appeal, the Court of Appeal held the following:

1. In the present case, the appellant had adduced unchallenged documentary evidence that the appellant and/or its licencees have been using the “GIORDANO” trade mark extensively in Hong Kong and in other countries around the world, in respect of goods such as articles of clothing, watches with leather straps, leathers belts, eyewear including sunglasses, bags and wallets. The appellant and/or its licencees first used the said trade mark in Malaysia in relation to goods such as articles of clothings, leather belts, bags, wallets, umbrellas and other fashion accessories sometime in 1990, before the respondent’s alleged date of first use of the trade mark in Malaysia in 1992.

2. The appellant had acquired substantial goodwill and reputation in the “GIORDANO” trade mark in Malaysia and in other countries in respect of those goods. The High Court should have taken into account the appellant’s significant use and registration of the said trade mark, particularly in relation to Class 25 goods in considering whether confusion or deception would arise.

3. Under section 14(1)(a) of the Malaysian Trade Marks Act 1976 (“Act”), registration of a trade mark should be refused if there is likelihood of confusion or deception to the public or customers. It is for the person applying for registration (the applicant) to establish that there is no likelihood of such confusion or deception; or that the result of the use of the mark will not cause a number of persons to wonder whether the products of the respondent and of the appellant came from the same source.

4. It is not enough for the applicant to negate the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his work. The applicant must also take into account all legitimate use of which the opponent may reasonably make of his mark within the ambit of his registration.

5. It may be important to see whether the registered mark is of a general or special character and to ascertain the extent of its reputation. Again, it may be important to determine whether the goods in respect of which it is registered constitute a narrow class or wide variety of goods as also will be the question of whether the goods of both the applicant and the opponent will be likely to find market substantially in common areas and among the same classes of people.

6. In the present case, both the appellant’s and respondent’s goods are fashion apparels which are targeted at the same class of customers and market areas. It is highly likely that members of the public will wonder if the appellant’s and respondent’s goods, both bearing the “GIORDANO” trade mark, might originate from the same source. There is sufficient evidence to show that the appellant is the originator or bona fide proprietor of the “GIORDANO” trade mark, particularly when the appellant has commenced use of the said trade mark in Malaysia prior to the date of the respondent’s application.

7. The evidence indicates that the respondent did not independently devise the mark himself. The respondent in truth is not the true proprietor of the “GIORDANO” trade mark. The respondent is trying to obtain the benefit of the worldwide reputation of the appellant. The respondent has failed to proffer any plausible explanation on his choice of mark which is identical to the appellant’s mark.

8. If at the date of application for registration of the trade mark by the respondent, the trade mark, although it has not been used in Malaysia, has become associated in the mind of the public with the appellant’s goods, then the respondent cannot claim or appropriate proprietorship of the said trade mark. There are no artificial limits on geographical areas to which reputation or goodwill can or cannot extend. Thus, the appellant’s reputation or goodwill in the “GIORDANO” trade mark outside Malaysia prior to the respondent’s use of the said mark in 1992 reinforces and supplements the reputation and goodwill of the appellant’s “GIORDANO” mark in Malaysia.

9. Modern technology and communications have improved to such an extent that the public in Malaysia would be aware of foreign marks even though such marks had not been previously used in Malaysia. Confusion and deception have no boarders in these days of information technology age. A small amount of use of the “GIORDANO” trade mark by the appellant is sufficient to prevent the respondent or any other party from claiming proprietorship in the said mark if its use by the respondent is likely to cause confusion to the public. The appellant in the present case has through its licencees used the “GIORDANO” trade mark in Malaysia prior to the filing date of the respondent’s application for registration.

10. In the present case, the learned Registrar, should refuse registration of the application by the respondent as there is a real risk of confusion or deception in that members of the public, as opposed to persons in the trade alone, might erroneously suppose that the respondent’s goods or products originated from or in are some way connected with the appellant.

11. The respondent as an applicant for registration of the “GIORDANO” trade mark bears the onus of proof to satisfy that the said trade mark is registrable and should be registered under the Act.

12. In law it is not a pre-requisite under section 14(1)(a) of the Act that the appellant must have acquired goodwill or reputation in the mark in Malaysia prior to the application for registration. It is sufficient so long as the mark has been in use in Malaysia by the appellant prior to the respondent’s application for registration. Going by the words of section 14 (1)(a) of the Act, the court has to determine whether the use of the “GIORDANO” trade mark by the respondent is likely to deceive or cause confusion to the public. If there are people who are likely to be deceived or confused by the use of the trade mark by the respondent, then it can safely be concluded that such use is likely to deceive or cause confusion to the public. Thus it is not necessary to find whether the appellant had acquired a reputation or goodwill in respect of its use of the trade mark on its products in order to get protection under section 14(1)(a) of the Act.

13. The issue of ‘first user’ of the said trade mark was raised before this court. The learned High Court judge concluded that the respondent was the first person who used the “GIORDANO” mark in Class 9 in Malaysia, hence the appellant has no reputation or goodwill in the “GIORDANO” mark in connection with goods in Class 9. However, the Court was of the view that the learned judge’s finding on this ‘first user’ issue is not supported by sufficient evidence adduced by the parties.

14. The Court is satisfied that there is no evidence to support the respondent’s allegation that he has been selling sunglasses, eye wear or fashion accessories bearing the “GIORDANO” trade mark in or before 1992. As such, based on the available evidence, the court is convinced that the appellant (not the respondent) is the first user and therefore the bona fide proprietor of the “GIORDANO” trade mark.

15. The Court was of the view that even if the respondent’s goods are not exactly the same with the appellant’s goods, nevertheless all their goods are in the same description. Therefore the prohibition under section 19(1)(a) of the Act is applicable and the respondent’s trade mark should not have been registered. The Registrar is duty bound to enforce the prohibition under section 19(1)(a) of the Act strictly, even without any opposition to the registration by the proprietor of the trade mark.

16. In the present case, the Court was of the view that “optical and sunglasses” (in Class 9) and “garment and wearing apparels” (in Class 25) are goods of the same nature in that both can be commercially described as “personal wear” or articles meant to be worn on the body. From a practical and commercial point of view, both categories of goods are considered to be fashion wear.

17. Both categories of goods have common practical purpose of acting as articles of adornment for personal wear. From a commercial stand point both categories of goods are used and sold as articles which portray one’s sense of fashion and preference. Sunglasses (Class 9) can be used as a form of fashion statement. One may choose square or oval-shape sunglasses purely based on preference and taste. Similarly, one may choose to buy clothes or pants (Class 25) of a particular design or colour based on one’s preference and taste.

18. In today’s business environment and practice, both categories of goods are more often than not manufactured, distributed and sold through the same sources or channels. For instance, many famous brands such as Giorgio Armani, Dunhill, Cartier, Nike, Calvin Klien, Dolce and Gabbano, Channel, Christian Dior, Hugo Boss, Versace, Gucci, Coach, Guess, manufacture and distribute both categories of goods. Further, a visit at any shopping complexes would show that such goods are commonly sold at the same places next to each other in departmental stores, fashion boutiques and retail stores.

19. The goods covered by the respondent’s application, i.e. optical and sunglasses, and the appellant’s goods, i.e. articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets, umbrellas and fashion accessories, are closely related as these are goods commonly sold together or next to each other in departmental stores or fashion boutiques. Further, those goods are likely to be manufactured, distributed and sold through the same sources or channels. It is also likely that the respondent and the appellant share the same market.

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ChipsMore v Chipsplus: Now you see it, Now you don’t.

Published on 30 July 2010

DANONE BISCUITS MANUFACTURING (M) SDN BHD v. HWA TAI INDUSTRIES BHD

The Plaintiff carries out the manufacture, distribution and sale of, among others chocolate chip cookies bearing the trade mark ChipsMore. The ChipsMore cookies have been sold in Malaysia since 1990 and are also exported to other countries in the region.

Sometime in 2001, the Plaintiff discovered that the chocolate chip cookies manufactured by the Defendant which were being sold in the market bearing the trade mark “Chipsplus” and a get-up and packaging which, according to the Plaintiff, were confusingly similar with the Plaintiff’s ChipsMore trade mark, get-up and packaging.

The Plaintiff through its solicitors, requested the Defendant cease and desist from its unlawful act. However, the Defendant through its solicitors denied the same and continued with the said unlawful acts. The Plaintiff then brought an action against the Defendant claiming trade mark infringement and passing off.

The High Court held the following:

(1)               There can be no doubt that there is the indistinguishable phonetic representation of the prefix ‘chips’. For another, while “Plus” and “More” are two different words, there is a sufficient resemblance in idea. In deciding similarity between two words, the words have to be considered as a whole. When comparing the two words to see whether one would be confused with and mistaken for the other, the words should be compared as a whole and not merely comparing syllable, and that regard should be paid to the fact that the word is to be used upon goods similar to those upon which the other party is being used. The true test is whether the totality of the trademark is such that it is likely to cause mistake, deception, or confusion.

(2)               In comparing both the marks, the Court observed and found as follows:

(i)                 The identical phonetic representation of the prefix “Chips”;

(ii)               The similar import of the suffixes “Plus” and “More”;

(iii)             The omission of the space between the two individual words “Chips” and “Plus”, corresponding to omission of the space between the two individual words “Chips” and “More”;

(iv)             The larger letter “C” of the prefix and “P” of the suffix compared to the rest of the Chipsplus trade mark, corresponding to the larger letter “C of the prefix and “M” of the suffix compared to the rest of the ChipsMore trade mark; and

(v)               The similar stylized double perimeter around the alphabets of both trade marks.

(3)               Having regard to the totality of the circumstances of the case and comparing the two marks with their features, the mark ‘Chipsplus’ used by the Defendant so nearly resembled the Plaintiffs trade mark ‘ChipsMore’ as to be likely to cause confusion. The similarity between the two marks was great that there was a high likelihood of confusion ensuing if any purchase of chocolate chip cookies was made by reference to the marks. As the Plaintiff had not authorized or licensed the Defendant to use that registered trade mark, the use of the Chipsplus trademark by the Defendant for identical goods, namely, chocolate chip cookies amounted to infringement of the Plaintiff’s registered “ChipsMore” trade mark.

(4)               The Plaintiff here had acquired substantial goodwill and reputation in its business and trade in chocolate chip cookies bearing the ChipsMore trade mark, get-up and packaging. The Plaintiff was entitled to the exclusive use of the ChipsMore trade mark, get-up and packaging in connection with chocolate chip cookies to the exclusion of others including the Defendant. Based on the evidence adduced, the Plaintiff had goodwill and reputation in its ChipsMore trade mark and the packaging of the ChipsMore chocolate chip cookies by having the ChipsMore trademark in a wavelike manner, with the colours blue and yellow on the packaging.

(5)               The Court examined the Plaintiff’s Chipsmore trade mark, get-up and packaging and the Defendant’s Chipsplus trade mark, get-up and packaging. In comparison, the Court found the following:

 

No Plaintiff’s ChipsMore Defendant’s Chipsplus Observation by the court
1. Plastic Packaging of rectangular shape containing the chocolate cookie. Plastic Packaging of rectangular shape containing the chocolate cookie. The plastic packaging is similar
2. The ChipsMore trade mark The Chipsplus trade mark 1. Chipsplus is in capital letters

2. The Prefix is same

3. The Suffix is different; similarity in idea.

4. The letter C and P of Chipsplus are designed similar to ChipsMore’s C and M.

3. The placing of the ChipsMore trade mark in a wavelike manner The placing of the Chipsplus is curvy There is similarity in the way the trade mark is being designed, be it wavelike or curvy.
4. The house mark “Danone” printed on the upper left hand side of the front of the packaging as well as its sides The house mark “Luxury” is printed on upper left of the front packaging The placing of both house marks at the upper left are the same.
5. The colour yellow is applied to the whole of the packaging including the front and back. The yellow colour packaging is used The yellow colour used by both marks are very similar
6. The chocolate chips scattered across the packaging concentrated mainly on the right of the packaging and tapering off towards the left of the packaging 3 pieces of chocolate chips cookies for front panel and 2 pieces of cookies for side panel are depicted on the packaging to give effect to the contents of the packaging. 1. The placing of a picture of the brand’s chocolate cookies in both trade marks is similar.

2. Both trade marks are placed on the right side of the packaging.

7. A blue swathe spanning across the packaging from left to right. There is blue swathe in the packaging. The blue swathe bears similarity in both marks.

(6)               The Defendant’s Chipsplus trade mark, get-up and packaging were confusingly and deceptively similar to the Plaintiff’s ChipsMore trade mark, get-up and packaging. The striking similarities rendered the trade and public to be confused as they are identical goods and the likelihood of confusion between the two products was extremely high. The ChipsMore trade mark, get-up and packaging had become distinctive of the Plaintiff’s product and the use by the Defendant of similar trade mark, get-up and packaging was likely to deceive or cause deception or confusion to a potential buyer of chocolate chip cookies. As the chocolate chip cookies of the Plaintiff and Defendant are in direct competition with one another, the court would infer likelihood of damage to the Plaintiff’s goodwill through the loss of sale. Thus the Defendant has passed off its products as the products of the Plaintiff.

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